Luv N Care Ltd v. Groupo Rimar

Filing 53

MEMORANDUM ORDER granting to the extent specified 32 Motion to Compel. FURTHER ORDER denying 32 Motion for Attorney Fees. Signed by Magistrate Judge Karen L Hayes on 6/15/15. (crt,Crawford, A)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF LOUISIANA
MONROE DIVISION
LUV N’ CARE, LTD

*

CIVIL ACTION NO. 14-2491

VERSUS

*

JUDGE ROBERT G. JAMES

GROUPO RIMAR, AKA SUAVINEX

*

MAG. JUDGE KAREN L. HAYES

MEMORANDUM ORDER
Before the undersigned Magistrate Judge, on reference from the District Court, is a
motion to compel discovery responses and associated request for costs and fees [doc. # 32],
filed by defendant Groupo Rimar, AKA Suavinex, SA (“Groupo Rimar”). For reasons assigned
below, the motion is GRANTED IN PART and DENIED IN PART.1
Background
Luv N’ Care, Ltd. (“LNC”) filed the instant complaint against Groupo Rimar on August
14, 2014. (Compl.).2 LNC alleges that, effective January 1, 2009, it contracted with Groupo
Rimar for the latter company to act as the exclusive distributor for LNC’s products in Spain.
(Compl., Exh. A; “2009 Agreement”). The 2009 Agreement included provisions protecting
intellectual property rights and ensuring confidentiality. Id. Effective April 12, 2012, however,
LNC and Groupo Rimar confected a Termination Agreement and Mutual Release (“2012

1

As this is not one of the motions excepted in 28 U.S.C. § 636(b)(1)(A), nor dispositive
of any claim on the merits within the meaning of Rule 72 of the Federal Rules of Civil
Procedure, this ruling is issued under the authority thereof, and in accordance with the standing
order of this court. Any appeal must be made to the district judge in accordance with Rule 72(a)
and L.R. 74.1(W).
2

LNC filed an amended complaint on December 8, 2014. (Amend. Compl. [doc. # 20]).

Agreement”) that recognized the expiration of the 2009 Agreement, and settled a dispute
regarding the payment of outstanding commission and invoices. (Compl., Exh. B). The 2012
Agreement also preserved certain provisions of the 2009 Agreement regarding intellectual
property rights, termination of trademark rights, and use of confidential information, that form
the basis of this suit. Id.3

3

Specifically, ¶¶ 15, 16, and 19 of the 2009 Agreement survived termination. (2012
Agreement, ¶ 3.3). They provide, in pertinent part, that
15.

B. Distributor [Groupo Rimar] hereby acknowledges and agrees
not to copy or utilize any of LNC’s formulae, trade secrets, product
design, patents, drawings, business plans, prototypes, packaging,
procedures and methods any [sic] other proprietary designs or
information without LNC’s written permission.
C. If in the event, the Distributor is found to have copied any
Intellectual Property Rights, Product Designs and/or Packaging as
defined in Paragraph 15 A & B above, then the Distributor will be
liable to pay to LNC, at a minimum, a royalty of twelve (12)
percent on all sales of the infringing product(s) as well as any other
remedies allowed by law for LNC to recover its losses and lost
sales.
*
*
*

19.

During the term of this Agreement and continuing after the
expiration or termination hereof, either party shall not disclose or
make accessible to anyone, or make use of the knowledge or
information which either party obtains or obtained during the term
of this Agreement with respect to formulae, trade secrets, product
design, patents, drawings, business plans, prototypes, procedures,
and methods any [sic] other proprietary designs or information of
the other party without the written consent of the other party . . .
During the term of this Agreement and continuing after the
expiration or termination hereof, Distributor agrees not to use in
any fashion said information or designs, or any colorable imitations
thereof. Any use by Distributor of said information or property
without LNC’s written consent will convey royalty and
commission rights upon LNC at a rate not less than those set
herein, without waiving and specifically reserving to LNC any
2

LNC contends that Groupo Rimar is selling products in violation of the 2009 Agreement,
as incorporated into the 2012 Agreement. (Compl.). Accordingly, LNC seeks damages for
breach of contract and for violation of the Louisiana Unfair Trade Practices and Consumer
Protection Act, La. R.S. 51:1401, et seq.4 LNC also requests an injunction, attorney’s fees,
interest, costs, and expenses.
On January 20, 2015, Groupo Rimar served LNC with its First Set of Interrogatories and
First Set of Requests for Production. (M/Compel, Exhs. 4 & 1). On February 20 and March 20,
2015, respectively, LNC filed its responses/answers and supplemental responses/answers to
Groupo Rimar’s First Set of Requests for Production and First Set of Interrogatories.
(M/Compel, Exhs. 2-3, 5-6). Dissatisfied with some of the responses, defense counsel conferred
with plaintiff’s counsel (apparently on March 24, 2015, see Reply Memo., pg. 1, n.1) in an
attempt to resolve the perceived discovery shortcomings. See LR 7.4.1 Certification. According
to the email exchange between counsel, the parties continued to discuss their concerns regarding
the sufficiency of one another’s discovery responses at least through April 21, 2015. See Emails
between Robert Altherr, Robert Baldwin, Christopher Roth, and Joe Guerriero; M/Compel, Exhs.
7-8.
Nevertheless, on May 14, 2015, Groupo Rimar filed the instant motion for an order
compelling LNC:
1)

to produce documents fully responsive to Groupo Rimar’s Requests for
Production Nos. 2-14, 17, 20, 21, 24, and 27; and

other remedies available to LNC . . .
(2009 Agreement, ¶¶ 15(B)-(C), 19).
4

On May 29, 2015, LNC filed a motion to voluntarily dismiss its claim under the
Louisiana Unfair Trade Practices and Consumer Protection Act, La. R.S. 51:1401, et seq. The
motion is set before the District Court. See Notice of Motion Setting [doc. # 44].
3

2)

to supplement its answers to Groupo Rimar’s Interrogatories Nos. 1-6.

That same day, LNC again supplemented its responses to Groupo Rimar’s discovery requests.
See Pl. Opp. Memo., Exh. A. On May 20, 2015, LNC filed its opposition to the motion to
compel. In its May 28, 2015, reply memorandum, Groupo Rimar maintained that LNC’s
discovery responses, as twice supplemented, remained deficient. (Def. Reply Memo. [doc. #
41]). On June 2, 2015, LNC filed a sur-reply. (Pl. Sur-reply [doc. # 48]). Briefing is complete;
the matter is ripe.
Law
Rule 33 provides that a party may serve an interrogatory on another party that relates to
any matter that may be inquired into under Rule 26(b). Fed.R.Civ.P. 33(a). Likewise, Rule 34
dictates that “a party may serve on any other party a request within the scope of Rule 26(b) . . . to
produce . . . any designated documents . . . or any tangible things” that are within the “party’s
possession, custody, or control . . .” Fed.R.Civ.P. 34(a)(1).5

5

Under Rule 26(b),
[u]nless otherwise limited by court order, the scope of discovery is as follows:
Parties may obtain discovery regarding any nonprivileged matter that is relevant to
any party's claim or defense--including the existence, description, nature, custody,
condition, and location of any documents or other tangible things and the identity
and location of persons who know of any discoverable matter. For good cause, the
court may order discovery of any matter relevant to the subject matter involved in
the action. Relevant information need not be admissible at the trial if the
discovery appears reasonably calculated to lead to the discovery of admissible
evidence . . .
Fed.R.Civ.P. 26(b)(1).
The courts understand the rule to provide for broad and liberal discovery. See
Schlagenhauf v. Holder, 379 U.S. 104, 114-5 (1964); Hickman v. Taylor, 329 U.S. 495, 507, 67
S.Ct. 385 (1947). Nonetheless, the scope of discovery is limited by relevance, albeit “relevance”
is to be broadly construed. Wyatt v. Kaplan, 686 F.2d 276, 284 (5th Cir. 1982). Ultimately, the
relevance inquiry ends where it starts; i.e., the relevancy of a discovery request depends upon
whether it is “reasonably calculated” to lead to admissible evidence. Wiwa v. Royal Dutch
Petroleum Co., 392 F.3d 812, 820 (5th Cir. 2004).
4

Rule 34's definition of “possession, custody, or control,” includes more than actual
possession or control of the materials; it also contemplates a party’s “legal right or practical
ability to obtain the materials from a nonparty to the action.” White v. State Farm Mut. Auto. Ins.
Co., 2011 WL 3423388 (M.D. La. Aug. 4, 2011 (citations omitted). A party must “make a
reasonable search of all sources reasonably likely to contain responsive documents.” Id. A party
also is “charged with knowledge of what its agents know or what is in records available to it.”
Autery v. SmithKline Beecham Corp., 2010 WL 1489968 (W.D. La. Aug. 4, 2011) (citation
omitted).
A party objecting to discovery “must state with specificity the objection and how it relates
to the particular request being opposed . . .” Reyes v. Red Gold, Inc. 2006 WL 2729412 (S.D.
Tex. Sept. 25, 2006) (citations omitted). In other words, to escape the production requirement, a
responding party must interpose a valid objection to each contested discovery request. McLeod,
Alexander, Powel & Apffel, P.C. v. Quarles, 894 F.2d 1482, 1485 (5th Cir. 1990) (citation
omitted). Conclusory objections that the requested discovery is “overly broad,” “burdensome,”
“oppressive,” and “irrelevant,” do not suffice. Id.
A party seeking discovery may move for an order compelling production against another
party when the latter has failed to answer an interrogatory or produce documents for inspection.
See Fed.R.Civ.P. 37(a)(3)(B). An evasive or incomplete response is treated as a failure to
respond. Fed.R.Civ.P. 37(a)(4).
Analysis
a)

Interrogatories

5

Interr. No. 1:

Identify with detail and particularity, including by nature, scope and
composition, each and every piece of Asserted CI6 that LNC alleges exists
within any Groupo Rimar product

Response/
Argument:7

Interrogatory number 1 response has been set forth in Plaintiff’s proposed
Second Amendment to the pleadings and further supplemented on May
18th, 2015 to show that the Defendant copied the hard and soft features of
Plaintiff’s pacifier shield, and also the method of manufacturing of this
shield, and copied the soft silicon top spout and the valve in same which
said valve works on compression as opposed to sucking being a very
unique concept when furnished to Defendant; Plaintiff also claims that
Defendant copied its Trademark “comfort” on its packaging. In addition,
Plaintiff’s expert, Ed Manzo’s report to Defendant (see attached Exhibit
“D”) was furnished on May 6th, 2015, 8 days before Defendants filed this
Motion to Compel that Defendant copied its Trademark “comfort” on its
packaging. N. Edward Hakim’s expert report was timely sent on May 19,
2015 to the Defendant’s Counsel.

Resolution:

As the court appreciates LNC’s response, it maintains that Groupo Rimar copied

certain aspects of LNC’s pacifier shield and manufacturing processes, plus a sippy cup top spout
and valve. In addition, via LNC’s proposed second amended complaint, Groupo Rimar
impermissibly affixed LNC’s trademark “Comfort” to its packaging – all as detailed in the expert
reports disclosed by LNC. If this understanding is incorrect, then LNC is obliged to immediately
supplement its answer with any omitted “Asserted CI.”

6

Groupo Rimar defines “Asserted CI” as,
each and every LNC product, product design, drawing, prototype, packaging,
procedure and method, or any other proprietary design or information
encompassed within the previously executed agreement between [Groupo Rimar]
and LNC on or about December of 2009 and which forms the basis for any
allegation or claim in LNC’s Amended Complaint.
See Groupo Rimar’s First Set of Interrogatories, Instructions.
7

Because of the multiple responses to each of the disputed discovery requests, the court
relies almost exclusively on the argument asserted by LNC in its opposition memorandum. In so
doing, the court has copied the text verbatim, i.e., typos and all.
6

Groupo Rimar disputes the sufficiency of plaintiff’s response on the basis that the items
specified by LNC are not covered by the agreement provisions invoked by LNC in this case. In
other words, the “Asserted CI” identified by LNC are not actionable. Groupo Rimar’s argument,
however, is an issue for another day (e.g., a dispositive motion or trial). For purposes of the
present discovery dispute, there is no indication that LNC is withholding any undisclosed
“Asserted CI.”

Interr. No. 2:

For each piece of Asserted CI identified in response to Interrogatory No. 1,
identify with particularity the date, individuals, and circumstances in which
each piece of Asserted CI was first developed at LNC

Response/
Argument:

Interrogatory number 2 is not relevant because it does not matter when the
CI of Plaintiff was developed as it only matters that Plaintiff furnished
them to Defendant, products containing the features, functions and designs
which Defendant copied; however, Plaintiff furnished Defendant
documents stating date of 1st use of said CI, patents in the United States
showing the dates filed which show the features, functions and/or designs,
and the dates of when Defendants purchased the products of Plaintiff
which contained those features, functions and/or designs (see Exhibit “E”
report and cover email attached).

Resolution:

The court finds that the interrogatory is potentially relevant because LNC’s claim

presupposes that it developed the Asserted CI before Groupo Rimar coopted it. Groupo Rimar
should be permitted to confirm when LNC first developed the Asserted CI. Insofar as LNC has
not answered the interrogatory, it shall so supplement its response within the next 14 days from
the date of this order.
Interr. No. 3:

For each piece of Asserted CI identified in response to Interrogatory No. 1,
identify all products known by LNC to be using such Asserted CI.

Response/
Argument:

See Supplemental Response to Interrogatory No. 1 and 2 above.

7

Resolution:

This evidence is relevant. Insofar as it has not already done so, LNC shall

supplement its response within the next 14 days to identify each Groupo Rimar product that
purportedly uses Asserted CI.
Interr. No. 4:

For each piece of Asserted CI identified in response to Interrogatory No. 1,
identify with detail and particularity, the date, manner, and circumstances
under which each piece of Asserted CI was transferred from LNC to
Groupo Rimar, including without limitation each person at LNC who
transmitted such Asserted CI, and the recipients at Groupo Rimar that LNC
believes to have allegedly received such Asserted CI.

Response/
Argument:

Interrogatory number four was answered that the accused products were
furnished both before and after the last Distributorship Agreement between
the parties, and then in the Supplemental Response filed the same day of
Defendant’s Motion to compel, Plaintiff furnished all products and dates
when Defendant received the accused products as well as all products
received by it en toto that were furnished to it by Plaintiff.

Resolution:

This evidence is potentially relevant. To the extent it has not already done so,

LNC shall supplement its response within the next 14 days to provide the requested information.
If, after reasonable and diligent inquiry, LNC is unable to identify anything more specific, it shall
so certify in its supplemental response.
Interr. No. 5:

For each piece of Asserted CI identified in response to Interrogatory No. 1,
identify with detail and particularity the date and circumstances under
which each piece of Asserted CI was disclosed to anyone outside of LNC
including the circumstances of such disclosure and whether the recipient of
the Asserted CI was under any obligation to keep such Asserted CI
confidential.

Response/
Argument:

Plaintiff objects to this interrogatory as it calls for confidential
information, but with that reservation of rights, suffice it to say that all of
the Plaintiff’s Distribution Agreements prohibit the Distributor from
producing selling and/or offering for sale any colorable imitations of
Plaintiff’s products.

8

Resolution:

The interrogatory seeks at least partially relevant evidence. Under Louisiana law,8

courts may resort to parol evidence when a contract is ambiguous. Sundown Energy, L.P. v.
Haller, 773 F.3d 606, 612 (5th Cir. 2014) (citation omitted). Thus, “[a]ny doubtful provisions
must be interpreted in light of the nature of the contract, equity, usages, the conduct of the parties
before and after the formation of the contract, and other contracts of a like nature between the
same parties.” Id.
LNC seems to have recognized the reasonable possibility that the contract provisions at
issue may be ambiguous because it has submitted an affidavit from Joseph Hakim stating that
LNC employs the same language in its agreements with other distributors. (Affidavit of Joseph
Hakim; Pl. Sur-Reply, Exh.). In addition, LNC supports its contract interpretation position by
citing a decision that considered similar or possibly even identical paragraphs from another one
of LNC’s distributor agreements. See Pl. Sur-Reply, pgs. 1-2 (citing LNC v. Jackel International
Limited; Hakim Affidavit, Exh. A). Considering that LNC is resorting to extra-contractual
sources to interpret the paragraphs at issue in this case, it certainly is fair and germane for
Groupo Rimar to discover whether LNC has consistently construed and enforced these same
provisions in other instances.
Accordingly, within the next 14 days from the date of this order, LNC shall identify
when, and under what circumstances, it provided Asserted CI to other distributors.9

8

The 2012 Agreement specifies that it should be interpreted in accordance with
Louisiana law. (2012 Agreement, ¶ 5.9).
9

According to LNC, all of its distributors are subject to similar contractual provisions.
Thus, although LNC contends that the requested discovery is confidential, the confidentiality
clause in the 2012 Agreement recognizes an exception for court-ordered disclosure. See 2012
Agreement, ¶ 5.5. The instant order should assist in that regard.
9

Interr. No. 6:

Separately for each piece of Asserted CI identified in response to
Interrogatory No. 1, identify with detail and particularity each piece of
Asserted CI contained within each Groupo Rimar product developed,
manufactured, sold, or offered for sale including without limitation, all
models, prototypes, and modifications, including the name and version
number of the product. Response

Response/
Argument:

Interrogatory number 6 has been answered in full in the attached
Supplemental responses sent to Defendant the same day of their
unannounced Motion to Compel . . .

Resolution:

Plaintiff does not contest relevancy, and apparently has responded in full. If not,

then LNC shall so supplement its response within the next 14 days from the date of this order.
b)

Requests for Production

Prod. Req. No. 2:

All documents relating to the Asserted CI.

Response/
Argument:

Plaintiff has send all drawings, all sketches, all notes (see Exhibit “G”
showing delivery), and all e-mails after the Settlement Agreement not
work product, the two Agreements in question, plus the complete list of
products furnished to Defendant both before and during the last
Distributorship Agreement, and the dates of first use of the Plaintiff’s
products in question with the Defendant’s accused products

Resolution:

Plaintiff does not contest relevancy, and apparently has responded in full. If not,

then LNC shall so supplement its response within the next 14 days from the date of this order.
Prod. Req. No. 3:

All documents and things regarding each and every piece of Asserted CI
that LNC alleges exists within any Groupo Rimar Product

Response/
Argument:

RFP number 3 has been answered with supplemental responses.

Resolution:

LNC contends that it has produced all responsive documents. LNC is reminded of

its ongoing obligation to supplement its discovery responses in the event that it uncovers
additional responsive documents.
10

Prod. Req. No. 4:

Documents and things sufficient to identify each and every LNC product
manufactured or sold containing any piece of Asserted CI including
documents sufficient to identify the design, development, first (or
earliest) sale, offer for sale, or public disclosure of each product.

Response/
Argument:

Plaintiff objects as being overly broad and burdensome and also objects
to relevance as the only issue is whether or not the products in question
were used by the Defendant after the Settlement Agreement was entered
into by the parties and did Defendant produce and offer for sale said
items which are unreasonably similar to Plaintiff’s products, in feature,
function and/or design after the Settlement Agreement.

Resolution:

The objection is partially sustained. LNC need only produce documents

establishing when LNC first designed, developed, sold, or publicly disclosed the Asserted CI.
LNC shall so supplement its response within the next 14 days from the date of this order.
Prod. Req. No. 5:

All engineering/laboratory notebooks, drawings, sketches, prototypes,
notes, schematics, experimental or test results, computer modeling,
correspondence, project status reports, email, or other documents and
things memorializing any portion of the conception or development of
each piece of Asserted CI.

Response/
Argument:

RFP number 5 has [been] answered by sending these before the Motion
to Compel was filed by Defendant.

Resolution:

LNC contends that it has produced all responsive documents. LNC is reminded of

its ongoing obligation to supplement its discovery responses in the event that it uncovers
additional responsive documents.
Prod. Req. No. 6:

All documents and things relating to comments made by anyone
regarding the performance, advantages, disadvantages, problems, or
features of any product incorporating any piece of Asserted CI.

Response/
Argument:

RFP number 6 is not relevant because any comments made about either
the Plaintiff’s products or the Defendant’s accused products have nothing
whatsoever with the question of whether or not the defendant breached
its contractual Agreement by using features, functions and/or designs of
products of Plaintiff furnish by it to Defendant
11

Resolution:

The objection is partially sustained. Although potentially relevant, the discovery

request is overbroad. Instead, the court will limit the request to papers and things that document
comments made as to Groupo Rimar’s incorporation of Asserted CI into its products. LNC shall
so supplement its response within the next 14 days from the date of this order.
Prod. Req. No. 7:

All documents and things dated prior to the alleged development of each
piece of Asserted CI by LNC concerning the same subject matter of the
Asserted CI

Response/
Argument:

RFP number 7 is likewise totally not relevant because it doesn’t’ matter
about documents before the Plaintiff’s CI was developed as that is not
the issue as set forth hereinabove…this is not an Intellectual Property
(IP) case and while in some instances in an IP case, that information may
be relevant, it is not in a breach of contract case.

Resolution:

The objection is sustained. Groupo Rimar did not demonstrate the relevance of

this requested discovery.
Prod. Req. No. 8:

All documents and things related to the use of any piece of Asserted CI
by any third party.

Response/
Argument:

RFP number 8 is certainly not relevant as use by third parties of the
Asserted CI by said third parties is of no consequence to the issues in this
case.

Resolution:

The objection is sustained. Groupo Rimar contends that the discovery is relevant

to demonstrate that “any use of any Asserted CI by Groupo Rimar came from a third party’s use
or disclosure of same as opposed to LNC providing that information to Groupo Rimar.” (Def.
Reply Memo., pg. 4, n3). However, if Groupo Rimar obtained the Asserted CI from a third
party, then Groupo Rimar, not LNC, is in the best position to identify the third party. In other
words, the purported relevance of the discovery is outweighed by the burden of production.

12

Prod. Req. No. 9:

All documents and things related to the first time LNC learned that any
person or entity was using or making a product that embodies any piece
of Asserted CI

Response/
Argument:

RFP number 9 is not relevant because it doesn’t make any difference
how many others if any, have embodied features of Plaintiff in other
products including any piece of Plaintiffs’ CI, because said others are not
a party to the contractual agreements in question and that
information does not change the Defendant’s obligation not to breach the
contract between the parties.

Resolution:

The objection is partially sustained. The discovery request is relevant insofar as it

seeks documents pertaining to when LNC first learned that Groupo Rimar was using or making a
product with Asserted CI. To the extent it has not done so, LNC shall so supplement its
response within the next 14 days from the date of this order.
Prod. Req. No.
10:

All documents and things related to the first time LNC learned of any of
Groupo Rimar's products that LNC is accusing of utilizing any of piece
of Asserted CI, including documents and things relating to any
investigation that LNC performed prior to filing the instant complaint
against Groupo Rimar.

Response/
Argument:

As for RFP number 10, the only documents originally that Plaintiff had
in response to this document were furnished, i.e., the color photographs
attached to the original petition and they were sent not only with the
Petition but in response to this RFP; since the Plaintiff has furnished all
it has.

Resolution:

LNC does not contest relevancy. To the extent that it has not done so previously,

LNC shall supplement its response within the next 14 days to provide the requested documents.
If, after reasonable inquiry, LNC is unable to identify any additional responsive documents, it
shall so certify in its supplemental response.

13

Prod. Req. No.
11:

All documents and things relating to or supporting the allegations in
LNC's Amended Complaint including all documents and things
identified, reviewed or relied upon in the preparation of such Amended
Complaint.

Response/
Argument:

As for RFP number 11, all documents have been furnished to Defendant
in response by Plaintiff except for the Defendant’s thousands of pages of
documents sent after April 24, 2015 and not even seen by Plaintiff’s
counsel until May 6th, 2015 for the reasons stated hereinabove.

Resolution:

LNC contends that it has produced all responsive documents. LNC is reminded of

its ongoing obligation to supplement its discovery responses in the event that it uncovers
additional responsive documents.
Prod. Req. No.
12:

All documents and things relating to any communication to which LNC
has been a party regarding whether or not any company or person is
utilizing any piece of the Asserted CI.

Response/
Argument:

RFP12 is not relevant for the same reasons objected to hereinabove, i.e.
it doesn’t matter if others may be using any piece of the Asserted CI.

Resolution:

The objection is sustained. Groupo Rimar did not establish the relevance of this

discovery.
Prod. Req. No.
13:

All documents and things relating to LNC's evaluation, analysis, or
investigation concerning any product made or sold by Groupo Rimar.

14

RFP 13 could not be responded to prior to receive
Defendant’s Supplemental responses to Plaintiff’s Discovery which
Plaintiff did not first view before May 6th, 2015 , but these documents are
already in Defendant’s possession; and other than the two
photographs already furnished with the Petition and in response to
Discovery before Defendant’s Motion To Compel, there are no other
documents re inspection or analysis except for Ed Manzo’s Original
Expert report, furnished before Defendant’s Motion To compel, and his
supplemental report done May 15th, 2015 and sent to Defendant’s on the
same date; plus the Expert Report of N. Edward Hakim not due until
May 19, 2015 which has been furnished on said date; other than
materials and/or data received from Defendant’s responses, this RFP has
been answered.

Response/
Argument:

Resolution:

LNC contends that it has produced all responsive documents. LNC is reminded of

its ongoing obligation to supplement its discovery responses in the event that it uncovers any
additional responsive documents.
Prod. Req. No.
14:

All documents and things relating to LNC's inspection or analysis of
Groupo Rimar's products performed by, or on behalf of LNC

Response/
Argument:

RFP14 could not be responded to prior to receive
Defendant’s Supplemental responses to Plaintiff’s Discovery which
Plaintiff did not first view before May 6th, 2015 , but these documents are
already in Defendant’s possession; and other than the two photographs
already furnished with the Petition and in response to Discovery before
Defendant’s Motion To Compel, there are no other documents re
inspection or analysis except for Ed Manzo’s Original Expert report,
furnished before Defendant’s Motion To compel, and his supplemental
report done May 15th, 2015 and sent to Defendant’s on the same date,
and N. Edward Hakim’s report sent on May 19, 2015.

Resolution:

LNC contends that it has produced all responsive documents. LNC is reminded of

its ongoing obligation to supplement its discovery responses in the event that it uncovers any
additional responsive documents.

15

Prod. Req. No.
17:

All documents and things that LNC intends to use to support its claim of
breach of contract in the Amended Complaint.

Response/
Argument:

RFP 17 has been furnished except for documents of Defendant’s as
Plaintiff’s Counsel has not been able to review the thousands of pages of
said document and also Plaintiff has depositions scheduled in Spain of
two of Defendant’s witnesses, so Plaintiff continues to reserve the right
to supplement this Discovery for those reasons; hovered, the purchase
records of products by Defendant that were furnished through Plaintiff,
the physical samples, of the CI and the accused products, the two
contractual Agreements in question, the photographs of the products ,
and the up to date shortly before Trial of this matter promised sales
information of the accused products by Defendant, along with the
Plaintiff’s expert reports are what Plaintiff will rely on subject to it
finding other information in document form in Defendant’s discovery
responses, and subject to whether or not Plaintiff’s Patents on the
accused products may be relevant and allowed in evidenced by the Court
to show the proprietary nature of same, said patent having been furnished
well before Defendant’s Motion to Compel.

Resolution:

LNC contends that it has produced all responsive documents. LNC is reminded of

its ongoing obligation to supplement its discovery responses in the event that it uncovers
additional responsive documents.
Prod. Req. No.
20:

Documents and things sufficient to show the name, address and specific
Asserted CI disclosed to each person to whom any piece of the Asserted
CI has been disclosed and the circumstances of such disclosure.

Response/
Argument:

RFP number 20 is not relevant for the same reasons set forth hereinabove
as it does not matter to whom the Asserted CI may have been shown.

Resolution:

The objection is partially sustained. The requested discovery is potentially

relevant to the claim at issue. As written, however, the production request is overbroad.
Accordingly, it is limited to papers and things documenting when any Asserted CI was disclosed
to Groupo Rimar. LNC shall so supplement its response within the next 14 days from the date
of this order.

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Prod. Req. No.
21:

Representative documents and things that LNC has released, sent, given
or otherwise distributed to any of its past, current, or potential customers
or associates, or to consultants or third parties, including any piece of the
Asserted CI, including but not limited to pamphlets, product
descriptions, brochures, pricing information, videos, slides, movies,
presentations, and any promotional materials related to the Asserted CI
or LNC products incorporating any piece of Asserted CI.

Response/
Argument:

RFP number 21 is not relevant for the same reasons set forth hereinabove
as it does not matter to whom the Asserted CI may have been shown.

Resolution:

The objection is sustained. Groupo Rimar did not establish the relevance of this

discovery.
Prod. Req. No.
24:

All licenses, settlements, or agreements or covenants, whether ultimately
consummated or not, to which LNC is or was to be a party pertaining to
the subject matter of any piece of the Asserted CI

Response/
Argument:

RFP 24 is not relevant as what Plaintiff did contractually with other
persons is of no consequence as relates to the contractual obligations of
the parties to the Agreements in question as the only issue is did the
Defendant breach its contractual agreement with Plaintiff.

Resolution:

LNC’s objection is overruled. See Interr. No. 5 discussion, supra. LNC shall

supplement its response within the next 14 days from the date of this order to provide the
requested information.
Prod. Req. No.
27:

All documents and things reviewed, referenced, considered, cited or
quoted in response to Groupo Rimar's First Set of Interrogatories

Response/
Argument:

As for RFP 27, Plaintiff shows that the only documents reviewed are the
ones already furnished to Defendant with the exception of the
Defendant’s documents sent, after April 24, 2015 but were not able to be
reviewed until May 6th, and Defendant is well aware of said documents
having furnished them; however, once Plaintiff has had time to go over
all of the thousands of pages sent, it will supplement this RFP if
necessary.

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Resolution:

LNC does not contest relevancy. To the extent it has not done so previously, LNC

shall supplement its response within the next 14 days to provide the requested documents. If,
after reasonable inquiry, LNC is unable to identify any additional responsive documents, it shall
so certify in its supplemental response.
c.

Fees, Costs, and/or Expenses
The court generally must award reasonable expenses to the prevailing party on a motion

to compel. Fed.R.Civ.P. 37(a)(5)(A). The rule authorizes exceptions, however, for nondisclosures and responses that were substantially justified, or other circumstances that make an
award unjust. Id. Moreover, when, as here, a motion to compel is granted in part and denied in
part, the court may apportion the reasonable expenses associated with the motion. Fed.R.Civ.P.
37(a)(5)(C).
Considering the mixed relief obtained by movant, the court is not inclined to assess costs,
expenses, and/or fees in this instance.
Conclusion
For the above-assigned reasons,
IT IS ORDERED that the motion to compel discovery responses [doc. # 32] filed by
defendant Groupo Rimar, AKA Suavinex, SA is GRANTED IN PART, solely to the extent
specified in the body of the decision.
IT IS FURTHER ORDERED that the motion [doc. # 32], including the request for fees,
expenses, and/or costs, otherwise is DENIED.
In Chambers, at Monroe, Louisiana, this 15th day of June 2015.
__________________________________
KAREN L. HAYES
UNITED STATES MAGISTRATE JUDGE

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